Ex Parte Brandl et al

Patent Trial and Appeal Board

May 25, 2017

13495126 (P.T.A.B. May. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/495,126 06/13/2012 Roland BRANDL 81522527US01 2929
65913 7590 05/30/2017
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
SYED, NABIL H
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
05/30/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip. department .u s @ nxp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND BRANDL and FRANZ AMTMANN
Appeal 2016-007500
Application 13/495,126
Technology Center 2600
Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007500
Application 13/495,126
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1—20, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter new grounds of rejection.
Representative Claim
1. A method performed by an RFID tag, the method
comprising:
receiving a request for a EPC serial number;
determining whether the EPC serial number has a present
value;
when the EPC serial number has the preset value, mapping
a portion of a tag ID to the EPC serial number; and
providing the EPC serial number in response to the RFID
request.
Prior Art
Diorio US 8,228,175 B1 July 24, 2012
Monza, “Monza 5 Tag Chip Datasheet,” Impinj (2011) (“Monza”).
Monza, “Monza RFID Tag Chips,” Impinj (2010-2014) (“Monza-2”),
“EPC-enabled RFID Serialization Management for SGTIN-96,” GS1
US (2012) (“GS1”).
“Alien Higgs 4 IC Serialization: Simplifying Enterprise Wide Unique
Numbering,” Alien Technology Corporation (2012) (“Alien”).
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Application 13/495,126
Examiner’s Rejections
Claims 1—11 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1, 5—7, 9, 12, 16, 17, 19, and 20 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Monza and Diorio.
Claims 2-4, 10, 11, and 13—15 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Monza, Diorio, and GS1.
Claims 8 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Monza, Diorio, and Alien.
ANALYSIS
Section 101 rejection of claims 1—11
Appellants contend “the claim requires that the steps be ‘performed by
an RFID tag’ which cannot be performed by a ‘human,’” and thereby that
the claims are directed to statutory subject matter. App. Br. 7.
The Examiner finds that claim 1 is “directed to a process” that
“corresponds to the concepts identified as abstract ideas by the courts, such
as using categories to organize, store and transmit information” without
“additional elements that are sufficient to amount to significantly more than
the judicial exception.” Ans. 4. The Examiner further finds the claimed
RFID tag’s “mere recitation in the preamble or mere implication of
employing a machine or article of manufacture to perform some or all of the
recited steps is not significantly more unless there is positive recitation in the
claim as a whole to breathe life and meaning into the preamble” and instead
“merely recite a field of use.” Ans. 3. We agree with the Examiner.
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Application 13/495,126
Abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank
Int'l, 134 S. Ct. 2347, 2355 (2014). Section 101 covers neither mental
processes as part of a category of abstract ideas, nor processes that merely
invoke a computer and its basic functionality for implementing such mental
processes. See Gottschalkv. Benson, 409 U.S. 63, 67-68 (1972); Parker v.
Flook, 437 U.S. 584, 589 (1978). In Alice, the Supreme Court articulated
the required analysis for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from patents that claim patent-eligible
applications of these concepts. The first step in the analysis is to determine
whether the claims at issue are directed to a patent-ineligible concept, such
as an abstract idea. Alice, 134 S. Ct. at 2355. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the claim elements individually and as an ordered combination to determine
whether the additional elements transform the nature of the claim into a
patent-eligible application. Id.
Under the first step, claim 1 is directed to an abstract idea of a mental
process performed by the steps of “determining whether the EPC serial
number has a preset value” and “when the EPC serial number has the preset
value, mapping a portion of a tag ID to the EPC serial number.” This mental
process is similar to other unpatentable mental processes identified by the
Supreme Court, such as converting binary-coded decimal numerals into pure
binary form (Benson, 409 U.S. at 71—72); computing an alarm limit {Flook,
437 U.S. at 594—595); hedging against the financial risk of price fluctuations
(Bilski v. Kappos, 561 U.S. 593 (2010)); and using a third party to mitigate
settlement risk {Alice, 134 S. Ct. at 2357). This mental process is also
similar to an unpatentable abstract idea identified by the Federal Circuit,
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Application 13/495,126
namely, comparing new and stored information and using rules to identify
options in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F.App'x
950, 955 (Fed. Cir. 2014).
Under the second step, the additional claim limitations are directed to
a data gathering step of “receiving a request for a EPC serial number” and a
post-solution step of “providing the EPC serial number in response to the
RFID request.” The additional pre- and post-solution steps of receiving and
providing data do not transform the patent-ineligible concept of a mental
process to a patent-eligible concept. Parker, 437 U.S. at 590.
Appellants contend that the term “RFID tag” recited in the preamble
of claim 1 and in dependent claims 6—8, is a non-generic and non-
conventional arrangement of known, conventional pieces. Reply Br. 2—3.
Appellants have not persuasively explained how any structural limitation of
the “RFID tag” in the preamble of claim 1 affects any of the steps performed
in the recited method. Even if we did give weight to “RFID tag,” Appellants
have not persuasively explained what specific, non-generic structural
limitations of the “RFID tag” affect any of the method steps. Nor have
Appellants persuasively explained how the claimed method, when
performed by an RFID tag, would be any different than the claimed method
performed by a generic processor or by a mental process.
Even if the claimed method is carried out by an RFID tag, as argued
by Appellants, the scope of the claims encompasses a mental process
implemented as well-understood, routine, and conventional computer
functions that do not transform the abstract mental process into a patent-
eligible invention. Alice, 134 S. Ct. at 2357—58.
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Application 13/495,126
We sustain the Examiner’s rejection of claims 1—11 under 35 U.S.C.
§101.
Section 103 rejections of claims 1—20
Claim 1 recites “when the EPC serial number has the preset value,
mapping a portion of a tag ID to the EPC serial number.” Appellants
contend that the serialization of Monza is “different than ‘mapping a portion
of a tag ID to the EPC serial number.’” App. Br. 14. According to
Appellants, Monza’s “‘serialization’ fails to map any portion of a tag ID to
the EPC serial number,” but rather “provides for separate TID (ROM) and
EPC (NVM) memory banks.” Reply Br. 3.
The Examiner finds that Monza’s serialization process uses the tag’s
ID to create the EPC serial number in a “technique known in the industry as
chip-based serialization, hence disclosing the limitation of mapping a
portion of a tag ID to the EPC serial number.” Ans. 5. To support this
finding, the Examiner, for the first time in the Examiner’s Answer, cites a
second reference by Monza titled “Monza RFID Tag Chips,” Tmpinj (2010-
2014) (“Monza-2”). The Examiner finds Monza-2 teaches self-serialization
where “EPC (SGTIN) is constructed, using the Monza chip’s Tag identifier
wherein the Tag ID serial number is used as EPC item serial number.” Id.
Page 4 of Monza-2 teaches “Electronic Product Code (EPC)
serialization” and “Self-Serialization” that “enables users to generate a serial
number directly from their tag’s Monza chip,” where “SGTIN serial
numbers generated directly from Monza’s unalterable TID.” Page 4 of
Monza-2 also includes a figure which is reproduced below:
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Application 13/495,126
TID;
.v 6 ns
EPC;
The figure above shows a TID including a Chip Serial Number consisting of
a Monza SeriesID, and an Item Serial Number for EPC pointing to the Item
Serial Number that is part of the EPC.
Appellants, in the Reply Brief, do not address the Examiner’s findings
from Monza-2. However, this oversight appears to be a result of the
Examiner introducing this new reference for the first time in the Response to
Arguments section of the Examiner’s Answer, without identifying this
newly cited reference in the statement of rejection, or map the claim to this
reference in the body of the rejection. We find the Examiner did not rely on
Monza-2 in the rejection of claim 1.
We do not sustain the rejection of claims 1, 5—7, 9, 12, 16, 17, 19, and
20 under 35 U.S.C. § 103(a) as unpatentable over Monza and Diorio. We do
not sustain the rejection of claims 2-4, 10, 11, and 13—15 under 35 U.S.C. §
103(a) as unpatentable over Monza, Diorio, and GS1. We also do not
sustain the rejection of claims 8 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Monza, Diorio, and Alien.
However, Appellants have not persuasively rebutted the Examiner’s
findings and conclusion from the Examiner’s Answer that the combination
of Monza, Monza-2, and Diorio renders claim 1 obvious. Therefore, we
adopt the Examiner’s uncontested findings of fact from the Examiner’s
Answer as our own.
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Application 13/495,126
We reject claims 1, 5—7, 9, 12, 16, 17, 19, and 20 as unpatentable
under 35 U.S.C. § 103(a) over Monza, Monza-2, and Diorio.
We reject claims 2-4, 10, 11, and 13—15 under 35 U.S.C. § 103(a) as
unpatentable over Monza, Monza-2, Diorio, and GS1.
We reject claims 8 and 18 under 35 U.S.C. § 103(a) as unpatentable
over Monza, Monza-2, Diorio, and Alien.
DECISION
The Examiner’s § 101 rejection of claims 1—11 is affirmed.
The Examiner’s § 103(a) rejections of claims 1—20 as unpatentable
over Monza and Diorio are reversed.
We enter the following new grounds of rejection against the claims
under 37 C.F.R. § 41.50(b):
We reject claims 1, 5, 6, 7, 9, 12, 16, 17, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Monza, Monza-2, and Diorio.
We reject claims 2—4, 10, 11, and 13—15 under 35 U.S.C. § 103(a) as
unpatentable over Monza, Monza-2, Diorio, and GS1.
We reject claims 8 and 18 under 35 U.S.C. § 103(a) as unpatentable
over Monza, Monza-2, Diorio, and Alien.
Since we have entered new grounds of rejection against the claims,
our decision is not a final agency action.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Application 13/495,126
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
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